Christian Louboutin has been using red lacquered shoe bottoms on his high fashion pumps since 1992. Apparently, he got the idea when he painted the bottom of a black shoe with red nail polish, and in 2008, Louboutin applied for trademark registration for the red shoe bottom (“Red Sole Mark”). Last year, Louboutin filed a lawsuit against Yves Saint Laurent (YSL), seeking to enjoin the high fashion competitor from selling its monochrome red shoe, which also has a red sole. The District Court of New York refused to enjoin YSL, holding that color alone could never be protected as a trademark.
The Second Circuit reversed, holding that the color red, when used on the bottom of a shoe with a contrasting upper shoe color, had acquired “secondary meaning” in the eye of consumers. Though the case was considered a win for Louboutin, the court did not grant the injunction against YSL because its use of the red sole was in conjunction with a red upper shoe, as opposed to a different color and therefore, was not a use of the Red Sole Mark.
Secondary Meaning—When a Color Acts Like a Logo
According to U.S. Courts, secondary meaning is acquired when “in the minds of the public, the primary significance of a product feature is to identify the source of the product rather than the product itself.” Louboutin submitted market studies to the court, which concluded that consumers had come to recognize the red sole as identifying the Louboutin brand. The results of the market studies were no accident—Louboutin invested millions of dollars marketing its red-soled shoes since they entered the market. The court's holding is certainly fair. If a company invests significant resources into developing a mark which consumers come to recognize, it's only fair that the company should enjoy exclusive use of its own branding. The law refers to such a mark as acquiring distinctiveness, or if not inherently distinctive (like the Nike swoosh), it is held distinctive if acquires secondary meaning in the mind of consumers.
A court in London also ruled that color could be subject to trademark protection when the court upheld Cadbury's use of the color purple for its milk chocolate packaging. British consumers, it held, had come to associate the purple packaging of milk chocolate with the Cadbury brand since it came into use in 1914. Under these cases color alone is not enough, but color used in a consistent way over time, which consumers come to associate with a brand may be subject to trademark protection. And no, the law will not uphold a mark that strips competitors of a necessary function of a product, or in terms of design, “a range of alternative designs.”
The Functionality Defense Generally Protects the Use of Color
So why can the red bottom of a shoe qualify for trademark, but a floral design for a dish set cannot? Because, according to the Second Circuit's reasoning, a floral design is a necessary aesthetic function to chinaware, and red shoe bottoms are not. Under U.S. trademark laws, the courts will not recognize a mark that puts competitors at a “significant non-reputation-related disadvantage.” This is known as the “aesthetic functionality” test—when a color trademark will “significantly hinder competition by limiting the range of alternative designs” it will not qualify for trademark protection.
When the court determines whether a design is functional it weighs the “source-identifying aspects” of the mark against the “competitive costs of precluding competitors from using the feature.” The court in the Louboutin case did not reach this analysis because it rested its reasoning on the preliminary “distinctive feature” test, but the Red Sole Mark would likely tip the scale heavily in favor of a source identifying aspect, over competitive costs to competitors, especially in light of the market study results submitted by both parties in the litigation.
The same can be said about Cadbury's purple packaging for its milk chocolate. The source identifying aspect of the packaging far outweighs any competitive cost (if one exists) from other companies packaging their milk chocolate in purple packages.
Louboutin and Cadbury's use of color is akin to logos. These cases do not create a danger that one company alone will be able to manufacture red shoes, black sneakers, brown chocolate or other color-based monopolies. Rather, they hold that if your unique use of a color (which is not intrinsically functional) has acquired brand recognition in the mind of consumers, you get to enjoy exclusive use of the mark. Courts have long accepted that knock-off products containing illegally manufactured logos infringe upon the true owner's exclusive right to reap the benefits of their own branding. As talented designers have shown us, color alone can be subject to trademark protection, if used in a clever way.